Ex Parte KOCH et al

Patent Trials and Appeals Board

Apr 12, 2019

14568230 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/568,230 12/12/2014 Carol A. KOCH
111494 7590 04/16/2019
A very Dennison Corporation
Amanda Wittine
8080 Norton Parkway
22D
Mentor, OH 44060
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO.
5304-US-Cl;
AD2014003673
CONFIRMATION NO.
8615
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/16/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
matsgroup _patentdocket@averydennison.com
mutua.mattu@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAROL A KOCH, PRAKASH MALLY A, and
CHARLES R. WILLIAMS
Appeal2018-002997
Application 14/568,230
Technology Center 1700
Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 32-39, 48, 49, 53---67, and 69-
982. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Appellant claims a method of forming a pressure sensitive adhesive.
1 Appellant is the applicant, A very Dennison Corporation, which, according
to the Appeal Brief, is the real party in interest. Appeal Brief filed
September 28, 2017 ("Br."), 1.
2 Claims 40-47, 50-52, and 68 are withdrawn from consideration. Final
Office Action entered May 4, 2017 ("Final Act."), 1.
Appeal2018-002997
Application 14/568,230
Br. 1-8. Independent claim 32 illustrates the subject matter on appeal and is
reproduced below with emphasis added to highlight contested subject
matter:
32. A method of forming a pressure sensitive adhesive, the
method comprising:
initiating polymerization by providing an effective
amount of bio-based glycerol esters, the glycerol esters
including a majority proportion of C8 to C22 fatty acids;
incorporating epoxide functionality into at least a
majority proportion of the glycerol esters, to thereby produce an
epoxidized glycerol ester intermediate;
reacting the epoxidized glycerol ester intermediate with
at least one multifunctional agent selected from the group
consisting of (i) alcohols, (ii) amines, (iii) amino alcohols, and
(iv) combinations thereof, to thereby form a partially
polymerized composition;
disposing the partially polymerized composition on a
receiving surface; and
fully polymerizing the partially polymerized composition
to form a pressure sensitive adhesive.
App. Br. 13 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered
November 7, 2017 ("Ans."):
I. Claims 32-39, 48, 49, 53-59, 61---67, 69, 70, 72-82, 86-91, 95,
and 97 under 35 U.S.C. § 103(a) as unpatentable over Klauck3 in view of
Hyde4;
3 Klauck, et al., WO 1995011284 A2, published April 27, 1995 (machine
translation);
4 Hyde, US 2007/0276108 Al, published November 29, 2007.
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Application 14/568,230
II. Claims 60, 83-85, 92-94, 96, and 98 under 35 U.S.C. § 103(a)
as unpatentable over Klauck in view of Hyde and Koch5; and
III. Claim 71 under 35 U.S.C. § 103(a) as unpatentable over Klauck
in view of Hyde as evidenced by Koch.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 32-39, 48, 49, 53-67, and 69-98 under 35 U.S.C. § 103(a) for the
reasons set forth in the Appeal Brief and below.
The Examiner finds that Klauck discloses producing an adhesive by
providing an effective amount of bio-based glycerol esters, incorporating
epoxide functionality into the glycerol esters, and reacting the epoxidized
glycerol esters with at least one monofunctional or polyfunctional
compound. Final Act. 4--5 (citing Klauck Abst., claim 5, pp. 2, 3, 5, and 6).
The Examiner finds that Klauck discloses that the "resulting adhesives may
be applied to various substrates," but does not disclose that a "partially
polymerized composition is fully polymerized on such substrate," and the
Examiner relies on Hyde to address this feature. Final Act. 5 ( citing Klauck
p. 6).
The Examiner finds that Hyde discloses preparing a pressure sensitive
adhesive by epoxidizing triglyceride esters of fatty acids derived from plant
oils, reacting the epoxidized fatty acid esters with acrylic acid to produce
acrylated monounsaturated fatty acid alkyl ester monomers, mixing the
monomers with a photoinitiator, combining the mixture with a packaging
material, and exposing the combination to UV light to fully polymerize the
5 Koch, WO 2008/144703 A2, published November 27, 2008.
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Application 14/568,230
acrylated monounsaturated fatty acid alkyl ester monomers. The Examiner
finds that "[t]his process allows for the direct preparation of a packaged PSA
[pressure sensitive adhesive]." Final Act. 5 (citing Hyde ,r 58).
The Examiner concludes that in view of Klauck' s disclosure of
preparing a pressure sensitive adhesive by epoxidizing bio-based glycerol
esters, and Hyde's disclosure of disposing a pressure sensitive adhesive on a
receiving surface followed by fully polymerizing the pressure sensitive
adhesive, "it would have been obvious to a person having ordinary skill in
the art at the time of invention to prepare a pressure sensitive adhesive with
the steps of disposing on a receiving surface and polymerizing so as to
provide a pre-packaged pressure sensitive adhesive." Final Act. 5.
On this appeal record, however, the Examiner does not provide a
sufficient factual basis to establish that the combined disclosures of Klauch
and Hyde would have suggested a method of forming a pressure sensitive
adhesive as recited in claim 32, for reasons express by Appellant and
discussed below.
Klauck discloses a method of preparing a binder that involves reacting
at least one fatty compound containing 1---6 epoxide functional groups with
at least one polyol, polyamine, or aminoalcohol. Abst., claims 1 and 5.
Klauck discloses that the binder is particularly useful for the production of
pressure-sensitive adhesives, and is suitable for substrates with different
elastic behavior or coefficients of thermal expansion. P. 6.
Hyde discloses a method of preparing a packaged pressure sensitive
adhesive composition that comprises (1) combining (a) an ultraviolet
radiation-polymerizable composition comprising an acrylated
monounsaturated fatty acid alkyl ester, a monoethylenically unsaturated
(meth)acrylic acid ester of a non-tertiary alkyl alcohol, and photoinitiator,
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Application 14/568,230
and (b) a packaging material, and (2) exposing the combination to ultraviolet
radiation to polymerize the ultraviolet radiation-polymerizable composition.
,r,r 1, 6, 17, and 57-59.
As Appellant points out (Br. 8-9), logic and the plain language of
claim 32 require first forming a partially polymerized composition, then
disposing the partially polymerized composition on a receiving surface,
followed by fully polymerizing the partially polymerized composition to
form a pressure sensitive adhesive. Altiris v. Symantec Corp., 318 F.3d
1363, 1369 (Fed. Cir. 2003) (explaining that to determine whether method
steps should be construed to require a particular order of performance
"[f]irst, we look to the claim language to determine if, as a matter of logic or
grammar, [ the method steps] must be performed in the order written."). As
Appellant also points out (Br. 9-10), the Examiner does not identify any
disclosure in Klauck and Hyde, when considered individually and in
combination, which describes or would have suggested performing such
method steps in the order required by claim 32.
As discussed above, Klauck discloses that the binder described in the
reference can be used to produce pressure-sensitive adhesives, and is
suitable for substrates with different elastic behavior or coefficients of
thermal expansion. One of ordinary skill in the art would have understood
these disclosures to implicitly indicate that the binder could be applied to a
substrate for use as a pressure sensitive adhesive. But, the Examiner does
not identify any disclosure in Klauck that would have suggested applying the
binder to a substrate in a partially polymerized state. Nor does the Examiner
identify any such disclosure in Hyde.
As discussed above, Hyde discloses combining an ultraviolet
radiation-polymerizable composition with a packaging material and then
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Application 14/568,230
exposing the composition to ultraviolet radiation to polymerize the
composition. Hyde thus discloses combining the ultraviolet radiation-
polymerizable composition in an unpolymerized state with a packaging
material, and initiating polymerization of the composition only after
combining the composition with the packaging material, rather than
applying the composition to the packaging material (substrate) in a partially
polymerized state, as required by claim 32.
In response to Appellant's arguments, the Examiner finds in the
Answer that Klauch discloses that polymerization between one or more
epoxide-functionalized fatty compounds and one or more polyol, polyamine,
or aminoalcohols can be accelerated by the addition of stabilizers, to such an
extent that the polymerization reaction can take place in acceptable times
even at room temperature. Ans. 14. The Examiner finds that Klauch thus
discloses that the polymerization reaction rate can be controlled by adding
stabilizers or by adjusting the reaction temperature, which, according to the
Examiner, indicates that once begun, the polymerization reaction occurs
gradually, and progresses from partial polymerization to eventual full
polymerization. Id. The Examiner determines that Klauck therefore
"specifies both partial and full polymerization, either expressly or implicitly,
by the teachings of its disclosure." Id. The Examiner finds that Klauck
further discloses that "[t]he polymer is applied onto substrates and formed
into such products such as pressure-sensitive adhesives." Id. Based on these
disclosures, the Examiner determines that "Klauck clearly discloses applying
the polymer on a substrate, where the extent of polymerization can be
modulated." Ans. 15.
Although Klauck does disclose that the polymerization reaction can
be accelerated by the addition of stabilizers to such an extent that the
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Application 14/568,230
polymerization reaction can take place in acceptable times even at room
temperature (pp. 4--5), and although Klauck does disclose applying the
polymer to substrates and forming the polymer composition into a pressure-
sensitive adhesive (p. 6), the Examiner does not identify any disclosure in
Klauch that describes----or would have suggested-applying the polymer to a
substrate in a partially polymerized state. Simply because Klauch discloses
that the polymerization can be accelerated by the addition of stabilizers,
which implicitly indicates that polymerization may occur more slowly in the
absence of stabilizers, does not constitute a disclosure or suggestion of
applying the polymer to a substrate when the polymer is only partially
polymerized.
Consequently, on this appeal record, the Examiner does not provide a
sufficient factual basis to establish that the combined disclosures of Klauck
and Hyde would have suggested a method of forming a pressure sensitive
adhesive by forming a partially polymerized composition, disposing the
partially polymerized composition on a receiving surface, and fully
polymerizing the partially polymerized composition, as required by claim
32. We accordingly do not sustain the Examiner's rejection of claim 32, and
of claims 33-39, 48, 49, 53---67, and 69-98, which each depend from claim
32, under 35 U.S.C. § I03(a) as unpatentable over Klauck in view of Hyde.
DECISION
We reverse the Examiner's rejections of claims 32-39, 48, 49, 53---67,
and 69-98 under 35 U.S.C. § I03(a).
REVERSED
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